ABBASOV, Lenar

Patent Trials and Appeals Board

Oct 29, 2020

2019005574 (P.T.A.B. Oct. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/441,207 05/07/2015 Lenar Abbasov 12PLAS0370-US-PCT 6868
95329 7590 10/29/2020
CANTOR COLBURN LLP - SABIC EXATEC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
10/29/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LENAR ABBASOV, ANDREW SICS, SARAH ELIZABETH
GRIESHABER, SCOTT MICHAEL DAVIS, and TIANHUA DING
Appeal 2019-005574
Application 14/441,207
Technology Center 1700
Before LINDA M. GAUDETTE, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 4–15, 17–20, and 22.3
We AFFIRM IN PART.

1 This Decision includes citations to the following documents: Specification
filed May 7, 2015 (“Spec.”); Final Office Action dated Nov. 15, 2018
(“Final Act.”); Appeal Brief filed March 11, 2019 (“Appeal Br.”);
Examiner’s Answer dated May 16, 2019 (“Ans.”); and Reply Brief filed July
16, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as SABIC
GLOBAL TECHNOLOGIES B.V. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
The invention relates to a coating system for coated metal or
polymeric tubes. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A coated tube comprising:
a metal tube; and
a coating composition on the metal tube, wherein the
coating composition comprises a polyester and an impact
modifier, and wherein the impact modifier comprises at least
one pendent group selected from epoxy groups and maleic
anhydride groups;
wherein the coating composition is in direct physical
contact with the metal tube or is in direct physical contact with
a metal coating layer located on the metal tube;
wherein one or both of a 0.254 mm nominal gauge film
of the coating composition or a 0.508 mm nominal gauge film
of the coating composition has an average peel strength from a
1 inch wide metal strip of greater than or equal to 0.5 N/mm
when peeled at a 90° angle, wherein the 1 inch wide metal strip
comprises steel and the metal coating, wherein the metal
coating comprises 95 wt% zinc and 5 wt% aluminum based
upon a total weight of the metal coating.
Appeal Br. 21 (Claims App.).
REJECTIONS
1. Claims 1, 2, 4, 5, 7–9, 12–15, 17, 19, 20, and 22 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Hibino ’568 (US
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2003/0066568 A1, pub. Apr. 10, 2003) in view of Schueler (US
2002/0115771 A1, pub. Aug. 22, 2002). Final Act. 3.4
2. Claims 1, 2, 4, 5, 7–12, 15, 17, 19, 20, and 22 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Hibino ’568 in view of
Lacroix (US 7,119,152 B1, iss. Oct. 10, 2006). Final Act. 7.
3. Claims 1, 2, 4, 5, 7–9, 12, 14, 15, 19, 20, and 22 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Hibino ’568 in view of
Zerafati (US 7,015,261 B1, iss. Mar. 21, 2006). Final Act. 11.
4. Claims 1, 2, 5–7, 11–15, 19, 20, and 22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Hibino ’411 (US 2003/0077411 A1,
pub. Apr. 24, 2003) in view of Agarwal (US 2009/0181199 A1, pub. July
16, 2009). Final Act. 16.5
5. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hibino ’568 in view of Schueler and Campagna (US
2002/0005223 A1, pub. Jan. 17, 2002). Final Act. 20.

OPINION
The Examiner found that Hibino ’568 and Hibino ’411 disclose hoses
for transporting liquid fuels. Final Act. 3, 16; see Hibino ’568 ¶ 46; Hibino
’411 ¶ 5. The hoses comprise a metal film layer covered with a resin layer,

4 The Examiner relies on Rogunova (US 2008/0214720 A1, pub. Sept. 4,
2008) as an evidentiary reference for claim 14 in this rejection as well as the
rejection of Hibino ’568 in view of Zerafati (see supra Ground 3).
5 The Examiner relies on the product data sheet for Joncryl ADR-4368 from
BASF dated 25 January 2008 and available at
http://www2.basf.us/additives/pdfs/4368_ TDS.pdf as an evidentiary
reference for claim 14.
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such as polybutylene terephthalate (PBT). Final Act. 3, 16; Hibino ’568
¶¶ 37, 55; Hibino ’411 ¶¶ 24, 37–38. The Examiner found that neither
Hibino ’568 nor Hibino ’411 discloses or suggests including an impact
modifier in the resin layer. Final Act. 3, 16. The Examiner found, however,
that each of Schueler, Lacroix, Zerafati, and Agarwal discloses a
composition that improves the impact properties of polyester resins such as
PBT. Final Act 3, 8, 12, 16. The Examiner determined that the ordinary
artisan would have modified Hibino ’568’s resin layer to improve its impact
properties as follows: (1) by forming the resin layer from Schueler’s
polyester resin composition comprising PBT and from 0.4 to 20 pbw of an
olefinic copolymer comprising glycidyl (meth)acrylate as a comonomer
(Final Act. 3–4); (2) by incorporating from 2 to 40 wt% of Lacroix’s impact
modifier comprising a core shell polymer and an ethylene copolymer
comprising unsaturated epoxide monomers (id. at 8); or (3) by incorporating
1 to 50 pbw of Zerafati’s impact modifier comprising 20–80 wt% of a
core/shell additive and 20–80 wt% of an ethylene/methacrylic acid
copolymer comprising a comonomer having an epoxy group (id. at 12). The
Examiner determined that the ordinary artisan would have modified Hibino
’411’s resin layer to improve its low temperature ductility, low permeability,
and resistance to gasoline and short chain alcohols by forming the resin layer
from Agarwal’s polyester resin composition comprising 51 to 90 wt% PBT
and up to 20 wt% styrene-acrylic copolymer comprising pendant glycidyl
groups (i.e., epoxy groups). Id. at 16–17.
“An obviousness determination requires finding both ‘that a skilled
artisan would have been motivated to combine the teachings of the prior art
. . . and that the skilled artisan would have had a reasonable expectation of
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success in doing so.’” In re Stepan Co., 868 F.3d 1342, 1345–46 (Fed. Cir.
2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1367–68 (Fed. Cir. 2016)). The Appellant argues that “there is no
motivation for one of skill in the art considering Hibino [’568] in view of
Schueler[, Lacroix, or Zerafati]” or “Hibino [’411] in view of Agarwal” “to
arrive at the coated tube of Claim 1.” Appeal Br. 8, 12, 15, 19. The
Appellant’s arguments are not persuasive because the Appellant has not
explained sufficiently why it was erroneous or unreasonable for the
Examiner to have found that the ordinary artisan would have modified
Hibino ’568’s and Hibino ’411’s resin layers to include an impact modifier
comprising at least one pendent group selected from epoxy groups and
maleic anhydride groups based on the secondary references’ teachings that
such compounds improve the impact properties of PBT. See Alcon Research,
Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (“[M]otivation to
modify a prior art reference to arrive at the claimed invention need not be
the same motivation that the patentee had.”).
As to the rejection of claim 1 based on the combination of Hibino
’411 and Agarwal, the Appellant additionally argues that the ordinary artisan
would not have been motivated to substitute Agarwal’s composition for the
resin layer of Hibino ’411’s hose. See Appeal Br. 17–18. The Appellant
contends that Hibino is concerned with forming a metal layer on the resin
layer without creating pinholes, and “fails to disclose that [its] metal layer
can be successfully wet plated on a resin substrate comprising the presently
claimed impact filler without forming a pinhole,” or “that the[] substrate in
general can include filler compositions.” Id. We agree with the Examiner
that this argument is not persuasive because the “Appellant has not provided
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any objective evidence that one of ordinary skill in the art would have had a
reason to expect that the composition of Agarwal would lead to pinhole
formation.” Ans. 26; see Appeal Br. 18 and Reply Br. 8 (arguing, without
citation to supporting evidence, that “one of even ordinary skill in the art
understands that the formation of the pinholes will be at least partially
dependent upon the chemical composition of the substrate and the
wettability of the metal on the respective components in the substrate”).
The Appellant also argues that the ordinary artisan would not have
had a reasonable expectation “of achieving the presently claimed adhesion to
a metal” by modifying Hibino ’568’s resin layer based on the teachings of
Schueler, Lacroix, or Zerafati, or Hibino ’411’s resin layer based on the
teachings of Agarwal. Appeal Br. 6, 11, 14, 18. The Appellant asserts that
Hibino ’568 “fails to consider the adhesion between the[] fluid-impermeable
layer and the[] rubber or resin layer” and Schueler, Lacroix, and Zerafati
“fail[] to consider the adhesion between their molding composition[s] and a
metal layer.” Id. at 6, 10–11, 14. The Appellant similarly argues that “Hibino
[’411] fails to disclose or suggest that good adhesion can be formed between
the[] metal plating layer and the[] underlying layer” and “Agarwal fails to
even consider the adhesion between [its] moldable polyester composition
and a metal layer.” Id. at 18.
The Examiner found that Hibino ’568’s coating composition, as
modified by Schueler, Lacroix, or Zerafati, and Hibino ’411’s coating
composition, as modified by Agarwal, would have been identical or
substantially identical to the claimed coating composition, and, therefore, the
prior art compositions necessarily would have exhibited the adhesion
properties recited in claim 1’s last paragraph. See Final Act. 4–5, 9, 13, 17–
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18. The Examiner’s finding is supported by the Specification as well as the
Appellant’s own admission that “the presence of the pendent groups are
directly responsible for [the improved adhesion].” Appeal Br. 7, 11, 14–15
(“[T]he presence of the impact modifier having the pendent group selected
from at least one of epoxy groups or maleic anhydride groups resulted in an
increased adhesion to the metal tube.” (citing Spec. ¶¶ 17, 60)); see also
Spec. ¶¶ 17, 21, 23, 41, 60. The Appellant has not refuted the Examiner’s
findings that the secondary references disclose impact modifiers comprising
a pendent group as claimed.
“Where . . . the claimed and prior art products are identical or
substantially identical, . . . the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(citations omitted). The Appellant has not provided persuasive argument or
evidence to meet his burden. Therefore, we are not persuaded of reversible
error in the Examiner’s finding that the ordinary artisan would have had a
reasonable expectation of success in achieving the claimed adhesion
properties. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322,
1332 (Fed. Cir. 2020) (“If a property of a composition is in fact inherent,
there is no question of a reasonable expectation of success in achieving it.”).
The Appellant relies on Specification Example 3 as evidence of
unexpected results. Appeal Br. 7, 11, 15. As explained by the Examiner, this
evidence is not persuasive of unexpected results because
[t]he data . . . are generated from a single working example and
single comparative example wherein the adhesion properties of
the coating composition were tested on GALFAN treated steel
sheets. . . . Appellant’s claims encompass a range of adhesion
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values which extends from 0.5 N/mm to an infinite degree [of]
adhesion. The data on the other hand do not indicate that such a
range of adhesion can be achieved with [a] composition
encompassed by the scope of the claims.
Ans. 22. The Appellant has not provided an adequate basis to support a
conclusion that other embodiments falling within the scope of claim 1 (or
claims 2, 4, 5, or 22 (see Appeal Br. 7, 11, 15)) would behave in the same
manner. Compare Appeal Br. 7, 11–12, 15 (“[O]ne of skill in the art would
readily understand that the presence of the claimed coating composition will
result in the improved adhesion and the testing of this narrower range
illustrates that the presence of the pendent groups are directly responsible for
said improvement. . . . One of skill in the art would readily understand that
the exemplified data would extend to the[] claim[] [22] ranges.”), with In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant demonstrates
that an embodiment has an unexpected result and provides an adequate basis
to support the conclusion that other embodiments falling within the claim
will behave in the same manner, this will generally establish that the
evidence is commensurate with scope of the claims.”) and In re Lindner,
457 F.2d 506, 508 (CCPA 1972) (mere conclusory statements of superiority
in the Specification and/or the Brief, unsupported by factual evidence, are of
little probative value). Further, the Appellant’s contention that Specification
paragraphs 17 and 60 provide support for unexpected results (see Reply Br.
5) is not persuasive because these paragraphs do not provide comparisons to
the closest prior art.
In sum, we are not convinced of reversible error in the Examiner’s
rejections of independent claim 1.
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The Appellant argues that the Examiner reversibly erred in finding
that Hibino ’568 discloses the claim 4 “coating composition ha[ving] a
thickness of 0.05 to 2 mm” (Appeal Br. 21 (Claims App.)). Id. at 9. The
Appellant contends that “Hibino [’568] fails to disclose a thickness range for
their rubber or resin layer and merely discloses an example where their
metal film was extrusion-coated with a 2.5 mm thick EPDM unvulcanized
rubber.” Id. at 9. The Appellant’s argument is not persuasive because it fails
to show error in the Examiner’s findings that adjusting the Hibino ’568’s
resin layer thickness would have been a matter of routine optimization given
Hibino ’568’s disclosures that the “resin layer . . . in the impermeable hose
permits the impermeable metal film to be protected from physical injury due
to external force and from liquid corrosion” (Hibino ’568 ¶ 27) and “[t]he
thickness of the resin layer can be determined suitably in accordance with
the portion in use and the purpose of use without any limitation” (id. ¶ 55).
Final Act. 5–6; see In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed.
Cir. 2012) (“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.”). Specifically, the
Appellant has not met its burden to show criticality in the claimed range. See
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d
454, 456 (CCPA 1955). To the contrary, the Specification disclosure relied
on by the Appellant (Appeal Br. 9, 12, 16) indicates a lack of criticality in
the claimed range of 0.05 to 2 mm. See Spec. ¶ 64 (“The protective coating
can have a coating thickness of up to several millimeters (e.g., up to or
exceeding 10 millimeters (mm)), specifically, 0.01 to 5 mm, more
specifically, 0.05 to 2 mm, and more specifically, 0.1 to 0.5 mm.”). The
Appellant also references the Specification Examples as evidencing
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criticality (Appeal Br. 9, 12, 16), but has not explained, nor is it apparent to
us, how these Examples show criticality for the claim 4 coating thickness
range. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (explaining that
the burden of analyzing and explaining data to support nonobviousness rests
with the Appellant).
In sum, we are not convinced of reversible error in the Examiner’s
rejections of claim 4.
Claim 17 depends from claim 1 and requires that “the metal tube
is . . . rigid or semi-rigid.” Appeal Br. 23 (Claims App.). The Appellant
argues that Hibino ’568 “teaches away from such a technical feature and
clearly desires a thin, flexible metal film.” Appeal Br. 9, 12. The Appellant
contends that Hibino ’568 “clearly and consistently discloses that [its]
impermeable metal film has a bellows shape” and discloses examples where
the bellows tube is bent. Id. at 9, 13. The Appellant argues that “one of even
ordinary skill in the art having a working knowledge of English would not
consider the bellows tube of Hibino [’568] to be rigid or semi-rigid.” Id.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Having reviewed Hibino ’568, we are not convinced that
the reference teaches away from a rigid or semi-rigid tube as claimed.
First, as argued by the Examiner, the Specification does not define
“rigid or semi-rigid.” See Ans. 25. The American Heritage dictionary defines
“rigid” as “[n]ot flexible or pliant; stiff” and defines “semi-” as “[p]artial;
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partially.”6 Applying, these definitions, the Examiner had a reasonable basis
for interpreting the claim term “semi-rigid” as encompassing a structure
having some flexibility, such as Hibino ’568’s metal bellows.
Second, even assuming that the Appellant is correct in stating that the
ordinary artisan would not have understood the terms “rigid or semi-rigid”
as encompassing a bellows shape, Hibino ’568 explicitly defines
“impermeable metal film” as “having a bellows shape in a part or a large
part in the axial direction but having a straight or bent tube shape in the other
part.” Hibino ’568 ¶ 13; see also id. ¶ 48. Because claim 17 does not require
that the tube is rigid or semi-rigid along its entire length, the broadest
reasonable interpretation of claim 17 encompasses a tube in which only a
portion thereof is rigid or semi-rigid (e.g., the straight portion of Hibino
’568’s tube).
Finally, the Appellant has not identified evidence to support its
assertion that because Hibino ’568’s metal tube has a thickness of only 50 to
500 micrometers, it could not be rigid or semi-rigid. See Appeal Br. 9.
Moreover, Hibino ’568 explicitly states that “[t]he thickness of the
impermeable metal film is not limited” (Hibino ’568 ¶ 50). See In re Morris,
127 F.3d 1048, 1057 (Fed. Cir. 1997) (“The PTO was not only permitted but
obligated to reject claim 1 when appellants failed precisely to define in the
written description the disputed language, and there was a reasonable
alternative definition.”).

6 Ahdictionary.com (accessed Oct. 21, 2020), https://www.ahdictionary.com
/word/search.html?q=rigid, https://www.ahdictionary.com/word/
search.html?q=semi.
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Accordingly, we are not convinced of reversible error in the
Examiner’s rejections of claim 17.
Claim 18 depends from claim 1 and requires that “the metal coating
[is] between the coating composition and the tube.” Appeal Br. 23 (Claims
App.). The Examiner determined that the ordinary artisan would have coated
the outer surface of the metal layer of modified Hibino ’568’s tube with a
zinc layer based on Campagna’s teaching that coating the outer surface of
inner metal tubes of multilayer fuel tubes with a zinc layer provides
corrosion resistance. Final Act. 20.
The Appellant argues that Campagna discloses that a primer layer
must be positioned between the zinc layer and the first polymer layer to
achieve good adhesion. Appeal Br. 20. The Appellant thus contends that the
ordinary artisan, when adding a zinc layer to modified Hibino ’568’s metal
tube, would have included a primer layer between the zinc layer and the
coating composition. Id. The Appellant argues that in the resultant coated
tube, the coating composition would not be in direct physical contact with
the metal coating layer as required by claim 18. Id.; see claim 1 (“wherein
the coating composition is in direct physical contact with the metal tube or is
in direct physical contact with a metal coating layer located on the metal
tube”).
The Examiner failed to address this argument in the Answer (see Ans.
27–28). See MPEP § 1207.02(A)(2) (9th ed. rev. 08.2017 Jan. 2018) (“The
examiner’s answer should include . . . [a] statement of whether the examiner
disagrees with each of the arguments of appellant in the brief with respect to
the issues presented and an explanation of the reasons for disagreement with
any such argument.”). In responding to a similar argument in the Final
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Office Action, the Examiner explained that the rejection is based on
Campagna’s teaching of the utility of a zinc layer, and “noted that the test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” Final Act.
29; see Appeal Br. 19.
This response does not adequately address the Appellant’s argument.
Specifically, the Examiner has not explained why the ordinary artisan would
have included only Campagna’s zinc layer in modified Hibino ’568’s coated
tube given Campagna’s teaching that a primer is necessary to promote
adhesion of a polymeric layer to a metal tube. In this regard, we note that
while Campagna explicitly states that various polymeric compositions may
be applied directly to the bare metal tube surface (see Campagna ¶ 38), we
find no indication that a primer may be omitted when the metal tube surface
is coated with a zinc layer (see, e.g., id. ¶ 39, claims 1–20).
Because the Appellant has argued persuasively that a preponderance
of the evidence fails to support the Examiner’s determination that claim 18
would have been obvious over the combination of Hibino ’568, Schueler,
and Campagna, we do not sustain above-listed ground of rejection 5.
Any additional arguments made by the Appellant in the Appeal and
Reply Briefs, but not discussed in this Decision, have either been fully
addressed by the Examiner and are unpersuasive for the reasons stated in the
Answer, or raise new arguments that should have been made in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) (“Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause.”).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
7–9, 12–
15, 17,
19, 20, 22
103(a) Hibino ’568, Schueler 1, 2, 4, 5,
7–9, 12–
15, 17, 19,
20, 22

1, 2, 4, 5,
7–12, 15,
17, 19,
20, 22
103(a) Hibino ’568, Lacroix 1, 2, 4, 5,
7–12, 15,
17, 19, 20,
22

1, 2, 4, 5,
7–9, 12,
14, 15,
19, 20, 22
103(a) Hibino ’568, Zerafati 1, 2, 4, 5,
7–9, 12,
14, 15, 19,
20, 22

1, 2, 5–7,
11–15,
19, 20, 22
103(a) Hibino ’411, Agarwal 1, 2, 5–7,
11–15, 19,
20, 22

18 103(a) Hibino ’568, Schueler,
Campagna
18
Overall
Outcome:

1, 2, 4–15,
17, 19, 20,
22
18
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART